Legislation & Practice
Hong Kong
HK IPD Clarifies Trade Mark Classification for Virtual Services
The increasing prevalence of virtual assets and services has created new challenges for trade mark applicants in Hong Kong, particularly around how to classify these offerings. In response, the Hong Kong Intellectual Property Department (HK IPD) has recently updated its Work Manual to provide clearer guidance on the classification of goods and services provided in virtual environments.
The revised guidance confirms that, as a general rule, the way a service is delivered —whether in person, online, or in a virtual environment — does not affect its classification. For example, “financial consultancy” remains in Class 36 regardless of whether it is provided face-to-face or in the metaverse. However, the Registry now makes clear that if the purpose or result of a service changes because it is delivered virtually, the classification may also change. For instance, while “transport services” in the real world fall under Class 39, “virtual transport services for entertainment purposes” are now to be classified in Class 41.
Practical Tips
These amendments bring much-needed clarity for applicants, helping them to draft more accurate specifications and reducing the risk of objections or delays. When preparing trade mark applications for virtual goods or services, applicants should carefully consider whether the purpose or result of the service has changed due to its virtual nature, and use clear, precise descriptions in line with the updated Work Manual and the International Classification’s general principles. Seeking professional advice is recommended, as the classification of novel virtual services can still present challenges.
As the digital economy continues to evolve, this updated guidance ensures that trade mark protection in Hong Kong remains fit for purpose in both physical and virtual worlds.
China
Draft Amendments to the PRC Trade Mark Law
On 27 December 2025, the Standing Committee of the National People’s Congress published for public consultation the Draft Amendments to the PRC Trade Mark Law. The draft proposes a series of significant changes aimed at tightening the regime against bad faith filings, strengthening use based governance and improving procedural efficiency. Notably, trade mark applications filed without an intention to use and which clearly exceed normal business needs would be refused, and applications obtained by deception or other improper means would become a direct statutory ground for opposition, rather than being actionable only through post registration invalidation.
The draft also reinforces the principle that trade mark rights should be anchored in genuine commercial use by empowering the authorities to proactively revoke registrations that have become generic or have not been used for three consecutive years without justification. Protection for well known trade marks would be expanded to cover bad faith registrations on dissimilar goods, even where the well known mark is not registered in China, provided that such registration is likely to mislead the public or harm the interests of the right holder. In addition, the draft expressly recognises dynamic (motion) marks as registrable signs, shortens the opposition period from three months to two, provides clearer rules requiring suspension of examination where prior rights depend on another pending case, and introduces more flexible and practical rules for calculating infringement damages by treating rights holder losses and infringer profits as alternative primary bases.
Case law
EU (3 decisions)
EU General Court case law on the motion mark
On 14 January 2026, the General Court of the European Union delivered its judgment in a case concerning the annulment of an EUIPO decision refusing registration of a motion mark, relating to windows for expedition vehicles. The mark in question depicted the opening and closing movement of a window, achieved by tilting and sliding along the window frame. The EUIPO refused registration of the motion trade mark on the grounds that the sign consisted exclusively of a feature of the product necessary to obtain a technical result, and that it lacked distinctive character.
The General Court dismissed the appeal, thereby affirming the EUIPO’s decision. In its reasoning, the Court reiterated the established principle that a sign which is comprised solely of features necessary to obtain a technical result cannot be registered as a motion mark. The Court also highlighted that the purpose of this rule is to ensure that a motion mark is not used to gain exclusive rights over technical solutions or functional features of a product, which are more appropriately the subject of patent protection, if eligible.
ECJ Clarifies Enforceability of Unregistered UK Trade Marks Post-Brexit C-337/22, 5 February 2026
The European Court of Justice (ECJ) has clarified that earlier unregistered UK trade mark rights are not a valid ground for opposition proceedings against EU trade mark (EUTM) applications following Brexit. In 2016, a British company opposed an EUTM application, relying on earlier unregistered trade mark rights in the UK. The EUIPO Board of Appeal rejected the opposition, reasoning that, after the expiry of the Brexit transition period on 31 December 2020, rights existing solely in the UK could no longer serve as a basis for opposition proceedings. The General Court disagreed, holding that the relevant date for assessing the existence and validity of an earlier right is the date of filing of the contested EUTM application, at which time the UK was still an EU Member State. The EUIPO appealed this decision to the ECJ.
The ECJ overturned the General Court’s ruling, stating that for an opposition to succeed, the earlier right must continue to exist and confer upon its holder the right to prohibit the use of a later trade mark not only at the date of filing, but also throughout the opposition proceedings and up to the date of the final decision. The Court emphasised that, following the end of the transition period, UK-protected rights can no longer conflict with EU trade marks, due to the principle of territoriality, which limits a trade mark’s effects to its territory of protection. Accordingly, there is no basis for rejecting an EUTM registration on such grounds.
The principal impact of this decision is on owners of UK-only rights, as these rights no longer provide a basis for blocking EUTM registration, even if the opposition was filed when the UK was still a Member State. To protect their interests across the EU, affected rights holders should consider whether they possess equivalent rights at EU level.
The General Court confirms that purely functional characteristics are not eligible for trade mark protection – T-437/25, 25 February 2026
The EU General Court has issued a ruling on the registrability of signs consisting exclusively of a shape necessary to obtain a technical result. A French company filed an EUTM application for a three-dimensional sign representing an ergonomic corkscrew handle moulded to fit the imprint of a human hand. The EUIPO initially objected on the basis of lack of distinctiveness, but subsequently withdrew this objection and raised a new one, finding that the sign consisted exclusively of the shape of a product necessary to obtain a technical result. The Board of Appeal upheld the refusal, prompting the applicant to appeal to the General Court, arguing that the handle’s irregular features were aesthetic rather than functional.
The General Court dismissed the appeal, confirming that all the essential characteristics of the sign were dictated by the technical function of the product, namely to enable a better grip for extracting a cork from a bottle. The Court held that even elements represented in dotted lines (here, the metal spiral) may be taken into account when assessing functionality, provided they are inherent and indispensable to the product’s function. Furthermore, the Court confirmed that the existence of alternative shapes capable of achieving the same technical result is irrelevant, and that aesthetic or unusual features do not exclude the application of this provision if they also contribute to the technical function.
This ruling clarifies that three-dimensional marks representing product shapes face significant hurdles under the functionality bar. The fact that a shape may be original, aesthetically pleasing, or depart from traditional designs does not save it from refusal if all its essential characteristics serve a technical purpose. Applicants seeking to protect product designs through an EUTM should carefully consider whether their shape incorporates at least one significant non-functional element, as there is a risk of refusal if this is not the case.
Germany
Paulaner's winning streak continues – now it's all about colours and waves
Paulaner, the well-known Munich brewery, has been defending its rights to the “Spezi” cola-orange drink for years. In 2022, the Munich Regional Court confirmed Paulaner’s right to use the Spezi name, based on a long-standing agreement with the original rights holder, Riegele brewery.
On 25 March 2025, Paulaner won another case at the Munich Regional Court, this time against Karlsberg brewery. The court found that Karlsberg’s “Brauerlimo” packaging, with its colourful wave design, infringed Paulaner’s registered colour trade mark for Spezi. The court noted that, in the soft drinks market, consumers often rely on distinctive colours and designs to identify brands.
Proving the likelihood of confusion based on a colour trade mark is no piece of cake. In case law, it is generally acknowledged that consumers do not usually identify colours as signs of a product's origin. However, as the court clarified, a different assessment is necessary where the public has become accustomed to using the shape or colour as an indication of origin. This is the case when it comes to lemonades and cola mix drinks. Consumers in this market are accustomed to the intentional use of visual design elements, such as colours, on bottles and cans to distinguish them from lemonades offered by other brands. For beverage brands seeking to protect distinctive packaging designs, the Paulaner decision confirms that formal colour mark registration at EUIPO, combined with consistent large-scale deployment across all product formats and proactive market surveillance, provides a robust enforcement framework.
UK
Establishing and Maintaining Trade Mark Distinctiveness: Insights from the Dryrobe Decision
In Dryrobe Ltd v D-Robe Outdoors, Dryrobe sued D-Robe for using a similar name on changing robes. D-Robe argued that “DRYROBE” was just a descriptive and generic term, and should not be protected as a trade mark. The court agreed that “DRYROBE” described the product, but found that the brand had become distinctive through its popularity and high-profile use, including as Team GB’s official robe supplier at the 2016, 2022 and 2024 Olympics.
The court also considered whether “DRYROBE” had become generic. Dryrobe’s active efforts—such as using the ® symbol, educating consumers with guidance on their website re proper use of the term, and policing misuse—convinced the judge that people saw DRYROBE as a brand, not just a type of robe. The judge compared this to how some people use “Google” as a verb but still recognise it as a brand.
Ultimately, the court found the marks were similar and ruled in favour of Dryrobe, finding both trade mark infringement and passing off. The case highlights the importance of building and protecting brand distinctiveness. Whilst genericide remains quite rare, successful brands must actively educate and police generic use to ensure that the mark retains its distinctiveness.
Italy
Bologna Court Decision on the interplay between designs, de facto trade marks and copyright: “Viper” vs “Genesi 11” necklaces
On 20 December 2025, the Court of Bologna issued a noteworthy decision in a dispute that arose after the renowned jeweller Bulgari had sent a cease and desist letter to a company marketing plastic necklaces. The latter brought action against Bulgari claiming that Bulgari did not have any exclusive rights on its “Viper” collection and Bulgari counterclaimed that the plaintiff’s plastic necklaces “Genesi 11” amount to an infringement of registered design rights, de facto trade mark rights, and copyright in relation to its collection.
With respect to the registered designs, the Court identified the key “expressive elements” as “trapezoidal links inserted one into another, evoking the scales of a serpent; a loop closure with a clasp in the shape of a rhombus, reminiscent of a viper’s head; and a tail, which runs perpendicular to the ‘bite’ point (the point of closure of the clasp).” The Court found that the plaintiff had not proven the lack of novelty or absence of individual character in Bulgari’s designs when considered as a whole, but only with respect to single elements. As a result, the Court upheld the validity of the designs.
Although the Court recognised that the “Genesi 11” necklace reproduced all the expressive elements of the “Viper” necklace, it assumed that the use of plastic in the plaintiff’s necklace, as opposed to the precious materials used in Bulgari’s, resulted in a markedly different overall impression for the informed user. This difference was deemed sufficient to exclude infringement of the registered designs.
Regarding the de facto trade mark, Bulgari identified it in the “distinctive trapezoidal shape” of the links. The Court found this trade mark not protectable, as the shape was necessary to achieve a technical result (the creation of a chain) and, given the artistic value of the necklace, conferred substantial value on the product.
On the issue of copyright, the Court applied the Italian provision whereby copyright protection of design requires both creative character and artistic value. The Court specify that, even in light of recent case law from the Court of Justice, the requirement of artistic value is not incompatible with EU law, but still it must not be interpreted in a “excessively restrictive manner”, i.e. a way that does not entail a too high threshold for copyright protection. The Court found this requirement satisfied, indicating as elements evidencing artistic value the fact that the Bulgari “Viper” necklace had appeared in a short film presented at the Rome Film Festival and had been exhibited at the Gallery of Modern Art in Milan. Consequently, the Court concluded that certain versions of the “Genesi 11” necklace infringed the copyright rights in the “Viper” necklace.
Overall, the decision offers an interesting overview of the various IP rights that may be invoked, even cumulatively, for the protection of design creations. However, it also presents certain problematic aspects and is not always aligned with prevailing Italian case law. In particular, with regard to registered designs, the prevailing approach in Italian jurisprudence is to find infringement where there is a reproduction of elements possessing individual character, even if the materials used by the third party differ from those employed by the design holder, which contrasts with the approach taken in this judgment. Furthermore, the compromise solution regarding copyright - affirming the legitimacy of the additional requirement of artistic value, but then proposing a “minimal” interpretation of it - raises concerns.
In any event, the judgment confirms the general tendency of Italian case law to recognise genuine exclusive rights in design and to find ways to protect it against copying and imitation.
Singapore
Cosmetic Warriors Limited v Genpulse Pte Ltd [2026] SGIPOS 1
LUSH Group opposed Genpulse’s application to register “LUSHAIR” for beauty and dermatological services, arguing it was too similar to LUSH’s own marks and could confuse consumers. The Registrar applied the Staywell “step by step” test and found the marks were visually, aurally, and conceptually different. The opposition was rejected.
The Registrar also clarified that only factors intrinsic to the goods or services themselves—not marketing or promotional choices like the use of apps or AI tools—can be considered when assessing confusion. Claims that “LUSHAIR” might be seen as a LUSH brand extension or collaboration were also dismissed, as there was no evidence this was common industry practice.
This case provides some clarity on the often-uncertain distinction between permissible intrinsic factors and impermissible trader-specific factors in the Staywell Confusion Inquiry. Although these observations were made in obiter, they serve as a timely reminder that trader-specific marketing choices, however commercially significant, will not assist in establishing a likelihood of confusion.
